USPTO Patents Application 10783114

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 223 1 3-1 450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

10/783,114

02/20/2004

7590

03/28/2005

Kent E. Baldauf
700 Koppers Building
436 Seventh Avenue
Pittsburgh, PA 15219-1818

Masahiko Yamamoto

1217-040374

7704

EXAMINER

KOCH, GEORGE R

ART UNIT

PAPER NUMBER

1734

DATE MAILED: 03/28/2005

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

10/783,114

Examiner

George R. Koch III

Applicant(s)

YAMAMOTO ET AL.

Art Unit

1734

« The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE f MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply -within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )□ Responsive to communication(s) filed on .

2a)D This action is FINAL. 2b)D This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.

Disposition of Claims

4) [3 Claim(s) 1-46 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6>n Claim(s) is/are rejected.

7) D Claim(s) is/are objected to.

8) £<] Claim(s) 1-46 are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10)D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-1 52.

Priority under 35 U.S.C. § 119

12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

2.D Certified copies of the priority documents have been received in Application No. .

3.Q Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) □ Notice of References Cited (PTO-892) 4) O Interview Summary (PTO-413)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) □ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5 ) D Notice of Informal Patent Application (PTO-152)

Paper No(s)/Mail Date . 6) □ Other: .

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 20050321

Application/Control Number: 10/783,114 Page 2

Art Unit: 1734

DETAILED ACTION

Election/Restrictions

1. Restriction to one of the following inventions is required under 35 U.S.C. 121:

I. Claims 1-19 and 40-46, drawn to an apparatus for inspecting film carrier
tape, classified in class 156, subclass 361.

II. Claims 20-39, drawn to a method of inspecting film carrier tape, classified
in class 156, subclass 64.

The inventions are distinct, each from the other because of the following reasons:

2. Inventions II and I are related as process and apparatus for its practice. The
inventions are distinct if it can be shown that either: (1) the process as claimed can be
practiced by another materially different apparatus or by hand, or (2) the apparatus as
claimed can be used to practice another and materially different process. (MPEP §
806.05(e)). In this case the apparatus as claimed can be used a materially different
process such as one used with a bottle label system, wherein labels are stored and
inspected on the film carrier tape.

3. Because these inventions are distinct for the reasons given above and have
acquired a separate status in the art as shown by their different classification, restriction
for examination purposes as indicated is proper.

4. Because these inventions are distinct for the reasons given above and the
search required for Group II is not required for Group I, restriction for examination
purposes as indicated is proper.

Application/Control Number: 10/783,1 14 Page 3

Art Unit: 1734

5. A telephone call was made to Kent Baldauf on 3/1 6/2005 to request an oral
election to the above restriction requirement, but did not result in an election being
made.

Applicant is advised that the reply to this requirement to be complete must
include an election of the invention to be examined even though the requirement be
traversed (37 CFR 1.143).

6. Applicant is reminded that upon the cancellation of claims to a non-elected
invention, the inventorship must be amended in compliance with 37 CFR 1 .48(b) if one
or more of the currently named inventors is no longer an inventor of at least one claim
remaining in the application. Any amendment of inventorship must be accompanied by
a request under 37 CFR 1 .48(b) and by the fee required under 37 CFR 1 .1 7(i).

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to George R. Koch III whose telephone number is (571)
272-1230 (TDD only). If the applicant cannot make a direct TDD-to-TDD call, the
applicant can communicate by calling the Federal Relay Service at 1-866-377-8642 and
giving the operator the above TDD number. The examiner can normally be reached on
M-Th 10-7.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Christopher Fiorilla can be reached on (571) 272-1 187. The fax phone
number for the organization where this application or proceeding is assigned is 703-
872-9306.

Application/Control Number: 10/783,114

Page 4

Art Unit: 1734

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). ,

Seorge RfKoch III
Patent Examiner
Art Unit 1734

GRK

3/17/2005